Basic Trademark S.A. v. Antares S.p.A c/o Germano Armani
Claim Number: FA0801001130680
Complainant is Basic Trademark S.A. (“Complainant”), represented by Duane
M. Byers, of Nixon & Vanderhye, P.C., of
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <robedikappa.us>, registered with Tucows Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On January 23, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 12, 2008 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <robedikappa.us> domain name is identical to Complainant’s ROBE DI KAPPA mark.
2. Respondent does not have any rights or legitimate interests in the <robedikappa.us> domain name.
3. Respondent registered and used the <robedikappa.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Basic Trademark S.A., has registered the ROBE
DI KAPPA mark with the United States Patent and Trademark Office (“USPTO”) (Reg.
No. 2,384,598, issued
Respondent registered the <robedikappa.us> domain name on
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to Paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to Paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant has established rights pursuant to Policy ¶ 4(a)(i) through its numerous registrations of the ROBE DI KAPPA
mark. See Expedia,
Inc. v. Tan, FA 991075 (Nat. Arb. Forum
domain name is identical to the ROBE DI KAPPA mark. The only difference is the omission of the
space between the words and the addition of the ccTLD “.us,” which does not
significantly distinguish the domain name from the mark. See Mattel, Inc. v. Unknown, FA 490083 (Nat. Arb. Forum
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Where Complainant makes a prima facie case under Policy ¶ 4(a)(ii), the burden shifts to Respondent to set forth concrete evidence that it does possess rights to or legitimate interests in the disputed domain name. The Panel finds that Complainant has established a prima facie case in the matter at hand. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent did not submit a Response to the Complaint. The Panel is therefore entitled to presume
that Respondent does not have any rights or legitimate interests in the
disputed domain name. See Bank of
Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not
only results in its failure to meet its burden, but also will be viewed as
evidence itself that Respondent lacks rights and legitimate interests in the
disputed domain name.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum
Complainant contends, and Respondent does not deny, that Respondent does not own a valid trademark identical to the disputed domain name. The Panel finds that Respondent does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(i). See Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
The disputed domain name, <robedikappa.us>, is currently being offered for sale by Respondent. The Panel finds such an offer for sale to be indicative of Respondent’s lack of rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under UDRP ¶ 4(a)(ii)).
Complainant contends that Respondent is not commonly known
by the <robedikappa.us> domain
name and is not authorized to use Complainant’s ROBE DI KAPPA mark in any
way. Nowhere in Respondent’s WHOIS information or elsewhere in the record
does it indicate that Respondent is or ever was commonly known by the <robedikappa.us> domain name. Absent evidence suggesting otherwise, the
Panel finds that Respondent has not established rights to or legitimate
interests in the domain name in accordance with Policy ¶ 4(c)(iii).
See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3,
2006) (finding that the respondent was not commonly known by the
<cigaraficionada.com> domain name under UDRP ¶ 4(c)(ii) based on the
WHOIS information and other evidence in the record); see also Gallup, Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent has initiated an offer
to sell the disputed domain name, which is identical to Complainant’s mark, for
a price in excess of out-of-pocket costs, while threatening in case of
Complainant’s refusal, to sell it to a third party. Complainant has further contended that
Respondent is currently offering the disputed domain name for sale at auction. The Panel finds that Respondent has
registered the <robedikappa.us> domain name
primarily for the purpose of selling it to Complainant, the trademark
owner. This action is evidence of bad
faith registration and use pursuant to Policy ¶ 4(b)(i). See Campmor, Inc.
v. GearPro.com, FA 197972 (Nat. Arb. Forum
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <robedikappa.us> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)-
Dated: March 4, 2008
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